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Posts Tagged ‘Bilski’

The Bilski Decision – The Score Card

by Orlando Lopez

As the Supreme Court’s Bilski decision starts to be applied, it is important to look at the decision and identify which areas are a majority opinion and which areas are statements by a plurality of the Court.  The Bilski decision is similar to a mid-season Red Sox game, you cannot tell the players without a scorecard.  The majority opinion was written by Justice Kennedy with Justices Scalia, Roberts, Thomas and Alito concurring; however, in the midst of the majority opinion there are two sections in which Justice Scalia did not join.  Those two sections are statements by a plurality of the Court.

First, the majority opinion holds that the machine or transformation test is not the sole test for determining whether an invention recited in a method claim is patent eligible; however, the majority does find the results of the machine or transformation test a useful clue to patentability.  Read the rest of this entry »


After the Bilski decision- not much of a change in USPTO practice

by Orlando Lopez

The US Supreme Court decision in Bilski v. Kappos relegated the “Machine or Transformation test,” instituted by the Federal Circuit‘s decision on Bilski, to a useful clue but not the ultimate test.  In terms of defending patent applications at the USPTO (the Patent Office), the decision does not significantly change present practices, according to the memo issued by the USPTO to the examiners.

Since what used to be a test is now a clue, the examiner will first perform the Machine or Transformation test to determine if the method is connected with the particular machine or system, or whether it transforms an article.  If the test results are positive, the examiner determines that the clue is present.  If the machine or transformation clue is present, the examiner faces a heavier burden, “a clear indication,” to show that the method claim is not patentable.  If the test results are negative indicating that the clue is not present, the examiner is advised to reject it as a claim that does not have patentable subject matter; consequently, the applicant then has the burden to show that the method claim is patentable.

As the Federal Circuit starts to consider appeals of cases involving questions of patentable subject matter, including the two cases remanded by the US Supreme Court, the criteria for deciding what is patentable subject matter method claims may evolve, and the practice at the Patent Office may change.  Until then, it is almost business as usual.